Minnesota Mining and Mfg. v. Beautone Specialties, 94-CV-11156-MEL.

• Decision Date: 14 July 1999
• Docket Number: No. 94-CV-11156-MEL.,94-CV-11156-MEL.
• Citation: 117 F.Supp.2d 72
• Parties: MINNESOTA MINING AND MANUFACTURING Company, Inc., Plaintiff, v. BEAUTONE SPECIALTIES CO., LTD., Beautone Specialties Co. Ltd., Yon-Fon-Yui Co., Yuen Foong Paper Co. Ltd., Yuen Foong Yu Paper Mfg Co., Ltd., and Taiwan Hopax Chemicals Mfg. Co. Ltd. Inc., Defendants.
• Court: U.S. District Court — District of Massachusetts

Page 72

117 F.Supp.2d 72

MINNESOTA MINING AND MANUFACTURING Company, Inc., Plaintiff, v. BEAUTONE SPECIALTIES CO., LTD., Beautone Specialties Co. Ltd., Yon-Fon-Yui Co., Yuen Foong Paper Co. Ltd., Yuen Foong Yu Paper Mfg Co., Ltd., and Taiwan Hopax Chemicals Mfg. Co. Ltd. Inc., Defendants.

No. 94-CV-11156-MEL.

United States District Court, D. Massachusetts.

July 14, 1999.

Frank P. Porcelli, Ralph Anthony Mittelberger, Fish & Richardson, Washington, DC, for Plaintiff.

Francis C. Lynch, Palmer & Dodge, Boston, MA, James Edward Anklam, Jones, Day, Reavis & Pogue, Washington, DC, Richard A. Dollinger, Mousaw, Viggdor, Reeves, Heilbronner & Kroll, Rochester, NY, for Defendants.

MEMORANDUM AND DECISION

LASKER, District Judge.

Minnesota Mining & Manufacturing Company, Inc. ("3M") sues Taiwan Hopax Chemicals Mfg. Co., Ltd., Yuen Foong Paper Co., Ltd., Yuen Foong Yu Paper Mfg. Co., Ltd., Beautone Specialties Co. Ltd. [Taiwan], and Beautone Specialties Co. Ltd. [Boston], (collectively "Beautone") alleging that the defendants have infringed 3M's U.S. Patent No. 4,166,152 (the "Baker-Ketola patent" or the "'152 patent"), entitled "Tacky Polymeric Microspheres." The defendants move for summary judgment under Fed.R.Civ.P. 56. The motion is granted.

I.

The Baker-Ketola patent covers the adhesive used on the repositionable notes that 3M manufactures and sells under the trademark POST IT®.¹ The adhesive is made up of inherently tacky, polymeric microspheres invisible to the naked eye. Unlike the flat coating in conventional adhesives such as 3M's Scotch® brand tape, only the tips of the adhesive microspheres make contact with the surface on which the note is placed, thereby reducing the contact area and resulting in lower adhesive force. The adhesive, therefore, allows 3M's repositionable notes to be sticky enough to stay in place (i.e., the adhesive has high "tack"), but also permits them to be readily removed without damaging the page (i.e., it has low "peel").

The patent also discloses an improved process for preparing the adhesive microspheres. Classic suspension polymerization was considered ill-suited because it lacked the stability necessary to prevent the polymer droplets from agglomerating. However, a previous patent, the "Silver" patent (U.S. Patent No. 3,691,140),² had taught the use of a modified form of suspension polymerization known as aqueous suspension polymerization. This modified process departed from traditional suspension polymerization because it required the use of emulsifier above the "critical micelle concentration."³ Agglomeration of the microspheres was prevented by adding an ionic comonomer, which stabilized the reaction by electrostatic or ionic stabilization.⁴ This comonomer participated in the polymerization and became part of polymer chains making up the microspheres. Accordingly, the Silver patent specified that the ionic comonomer was an essential ingredient in successful microsphere preparation.

The innovation of the Baker-Ketola patent was that agglomeration could be avoided in the aqueous suspension polymerization process by using an ionic suspension stabilizer, which also relied on electrostatic stabilization, rather than an ionic comonomer. The use of an ionic suspension stabilizer instead of an ionic comonomer simplified the polymerization process and made it easier to control. Moreover, unlike the ionic comonomer of the Silver patent, the ionic suspension stabilizer did not participate in the actual polymerization or become part of the resulting microspheres. As the Background of the Invention section of the Baker-Ketola patent explains:

It has now been found that inherently tacky microspheres having physical properties similar to those of the Silver patent ... can be prepared which are not limited to copolymers, but may also be homopolymers, and do not contain an ionic comonomer. The microspheres are prepared by aqueous suspension polymerization, but have as an essential ingredient in their preparation a hereinafter defined suspension stabilizer.

The patent claims go on to specify that the suspension stabilizer be "ionic" and have "an interfacial tension of at least about 15.0 dynes per centimeter."

The accused products are "STICK ON" notes imported from Taiwan and sold in the United States by Beautone. The adhesives used on the accused notes, Glues F, G, or combinations and derivatives thereof,⁵ like the Baker-Ketola adhesive, are made up of numerous, tacky, polymeric microspheres and are prepared using aqueous suspension polymerization. However, Beautone's recipe differs from 3M's. It employs two non-ionic suspension stabilizers, polyvinyl alcohol and hydroxy propyl methyl cellulose ("HPMC"), rather than an ionic suspension stabilizer, in stabilizing the reaction to prevent agglomeration of the microspheres. Another distinction is that the interfacial tension of polyvinyl alcohol is 9.0, the interfacial tension of HPMC is 13.0 dynes per centimeter, and their combined interfacial tension is 11.0 dynes per centimeter, which in each case is below the 15.0 dynes per centimeter specified in the Baker-Ketola patent.

3M filed this action for infringement, alleging that the adhesive microspheres used on Beautone's STICK ON notes infringed the Baker-Ketola patent. 3M also petitioned the International Trade Commission (the "ITC" or "Commission"), pursuant to section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337(a)(1)(B), for an order excluding the STICK ON notes from importation into the United States by reason of alleged infringement of the Baker-Ketola patent by the Beautone adhesive. The present action was stayed during the pendency of the ITC proceedings.

The Baker-Ketola Patent

The Baker-Ketola patent contains ten claims. Of those ten, only claims 1-6 are relevant to this case.⁶ Claim 1, which is exemplary, is an independent product-by-process claim covering the adhesive microspheres.⁷ It begins with a description of the microspheres:

Infusible, solvent-insoluble, solvent-dispersible, inherently tacky, elastomeric polymeric microspheres formed from non-ionic monomomers and comprising a major portion of at least one oleophilic, water emulsifiable alkyl acrylate or methacrylate ester, said polymeric microspheres having a glass transition temperature below about - 20~C ...

The claim then specifies the process used to prepare the microspheres:

having been prepared by aqueous suspension polymerization in the presence of ...

It continues by describing the emulsifier and stabilizer required to be present during the polymerization process:

at least one anionic emulsifier at a concentration level above said emulsifier's critical micelle concentration and an ionic suspension stabilizer having an interfacial tension of at least about 15.0 dynes per centimeter.

The patent defines "interfacial tension" as "the value determined between the monomer phase and a 1.0 percent by weight aqueous solution of the stabilizer." It also identifies a test, ASTM # D-1331-56, entitled "Standard Methods of Tests for Surface and Interfacial Tension of Solutions of Surface Active Agents" for measuring the tension. Furthermore, it warns that if the interfacial tension at this stage "falls below about 15.0 dynes per centimeter, there is insufficient stabilization of the final polymerized droplets and agglomeration may occur." In addition, the examples of suspension stabilizers disclosed in Table I of the patent all have interfacial tensions that are greater than 15.0 dynes per centimeter.

Beautone, for purposes of these motions, does not dispute that the description of the microspheres above in the Baker-Ketola patent applies to its STICK ON microspheres:

Infusible, solvent-insoluble, solvent-dispersible, inherently tacky, elastomeric polymeric microspheres formed from non-ionic monomomers and comprising a major portion of at least one oleophilic, water emulsifiable alkyl acrylate or methacrylate ester, said polymeric microspheres having a glass transition temperature below about - 20~C ...

Nor does it dispute that its adhesive microspheres are prepared using:

aqueous suspension polymerization in the presence of at least one anionic emulsifier at a concentration level above said emulsifier's critical micelle concentration.

Rather it contends that its Glue G does not infringe because it utilizes two non-ionic stabilizers instead of a single ionic suspension stabilizers and that the interfacial tension of its stabilizers are much less than 15.0 dynes per centimeter. Accordingly, the question of infringement in this case turns on the interpretation of the last phrase:

in the presence of ... an ionic suspension stabilizer having an interfacial tension of at least about 15.0 dynes per centimeter.

Prosecution History of Baker-Ketola

The above limitation was added to the claims during the prosecution of the Baker-Ketola patent, but the parties dispute the reason for the amendment. 3M alleges that the purpose of the amendment was to overcome the examiner's incompleteness objections under 35 U.S.C. § 112. Beautone argues that it was in response to the prior art rejection under 35 U.S.C. §§ 102 & 103 and, therefore, 3M is estopped under the doctrine of prosecution history estoppel from relying on the doctrine of equivalents. Because the disputed language was added following a rejection based on both the prior art and incompleteness grounds, the prosecution history is described in more detail below.

On August 17, 1977, 3M filed the application with the U.S. Patent and Trademark Office ("PTO") on behalf of William A. Baker and Warren D. Ketola. Of the original claims, only claim 7 contained the limitation requiring "an ionic suspension stabilizer having an interfacial tension of at least about 15.0 dynes per centimeter." Initially, all of the proposed claims were rejected by a PTO patent examiner on March 16, 1978. The examiner concluded that they were unpatentable because they were anticipated...